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In Human Genome Sciences, Inc. v. Genentech, Inc., C.A. No. 11-082-LPS (D. Del. July 18, 2011), Judge Stark granted a rare motion to transfer venue. The deciding factor cited in the opinion is the fact that the judge at the alternative venue has “almost a decade of experience” with the patent at issue, including “four actions [involving] three claim construction orders, . . . fourteen summary judgment motions, . . . nine hearings, . . . twenty-five substantive orders, and . . . over 800 docket entries. [The judge] considers herself ‘a student of [the patent],’ being very familiar with the prosecution history, including the interference and reexamination record.” Id. at 18-19. Further, the judge has stated that she “is willing to preside over the instant actions, in addition to the related actions already pending before her.”
Along the way, the Court also addressed an argument that the lack of personal jurisdiction over the plaintiff in the proposed venue prevented transfer. The Court found that argument unpersuasive, because the plaintiff “would have conceded to personal jurisdiction . . . by filing suit there.” Id. 6-7.

In LG Electronics USA, Inc. v. Whirlpool Corp., C.A. No. 08-234-GMS (July 1, 2011), Judge Sleet recently denied LG’s JMOL motion of obviousness and lack of written description because LG failed to preserve the issues by including them in a timely filed Rule 50(a) motion . Id. at 9. Judge Sleet did, however, grant LG’s motion for a new trial with respect to the sufficiency of the written description of Whirlpool’s ‘130 patent and obviousness of Whirlpool’s ‘601 patent. Id. at 22-23, 26-27. The court noted that LG’s “[f]iling a Rule 50(a) motion at the proper time would have allowed the court to more efficiently resolve the issue.”. Id. at 24, n.9; 26, n.11.

In Internet Media Corp. v. Hearst Newspapers, LLC, C.A. No. 10-690-SLR (D. Del. June 28, 2011), Judge Robinson denied the defendant’s motion to dismiss a patent infringement suit because the defendant’s argument would require construction of an asserted claim. Id. at 7. The defendant argued that the complaint should be dismissed because the asserted patent “is indefinite as a matter of law[.]” Id. at 4. “Specifically, defendant argues that claim one is a means-plus-function claim relating to the use of computers, thus requiring that the specification disclose an algorithm by which the computer performs the recited function.” Id. The “[d]efendant argues that the court need not construe the asserted claim and must simply look to the specification to see if an algorithm is disclosed.” Id. at 6. The court, however, found that “[s]ome degree of claim construction is necessary to determine if the apparent means-plus-function claim is actually a means-plus-function claim, or if the claim itself recites enough structure to overcome the presumption of 35 U.S.C. § 112 ¶ 6.” Id. at 7. Further, “the court would need to construe the claim in order to determine what algorithm to look for in the specification and what elements are necessary in said algorith to satisfy § 112 ¶ 6.” Id. Thus, because claim construction “is properly reserved for summary judgment[,]” Judge Robinson denied the defendant’s motion to dismiss. Id.

In OSI Pharmaceuticals, Inc. v. Mylan Pharmaceuticals, Inc., C.A. No. 09-185-SLR (D. Del. June 30, 2011), Judge Robinson recently issued an order enjoining an ANDA defendant “from launching its generic drug until the court’s decision issues” because the stipulated post-trial briefing schedule would exceed “what the court estimates to be the expiration of the 30-month stay invoked by operation of the filing of this lawsuit[.]” Id.

After a 3-day bench trial in an ANDA case, Judge Sleet recently found that defendant’s proposed product did not infringe plaintiffs’ patent. Astrazeneca LP v. Mylan Pharms. Inc., C.A. No. 08-453-GMS (D. Del. June 23, 2011). In the Memorandum, Judge Sleet warned future parties about the tone they take in submissions to the court. In its post-trial brief, Astrazeneca mocked Mylan’s expert for failing to produce evidence in support of an analogy comparing ethycellulose to pasta, criticizing the analogy as a ‘“creative explanation [that] was supported by no experimental results or scientific observations (from either the laboratory or the kitchen).”’ Id. at 11 n.8. (alteration in original). Mylan mocked Astrazeneca’s expert’s explanation of material he examined by stating in their reply brief ‘“In their excitement to hear that Dr. Davies found something in the bottom of his Petri dish . . .”’ Id.

Judge Sleet warned future parties “that such condescension is unbecoming an attorney appearing before a federal court, and is in no way constructive or beneficial to the court’s task of weighing the evidence presented at trial and reaching its findings of fact and conclusions of law.” Id.

Last week, Special Master David A. White issued an opinion on a number of discovery issues relating to a motion to compel in XPRT Ventures, LLC. v. eBay, Inc., C.A. No. 10-595-SLR (D. Del. June 15, 2011). The motion sought to expand the scope of document discovery by increasing the applicable time period and number of custodians. Special Master White granted the motion in part, based on the potential relevance of the evidence, but refused to order document production from individuals not employed by the defendants. Id. at 26-27. Documents of former employees that are still in the possession, custody or control of the defendants, however, are subject to discovery. Id. at 30.

On June 8th, Judge Robinson denied two motions to transfer. We reported on one last week — Marvell International Ltd. v. Link_A_Media Devices Corp., C.A. No. 10-869-SLR (D. Del. June 8, 2011). The second denial, in XPRT Ventures, LLC v. eBay, Inc., C.A. No. 10-595-SLR (D. Del. June 8, 2011), again emphasized that (1) the defendants are Delaware corporations, (2) that judicial congestion in the District of Delaware is not a factor, and (3) that “[i]n this electronic age, there are no substantial burdens associated with discovery or witness availability that support the need to transfer.” Id. at 6-7.

One interesting wrinkle in this second denial is that the plaintiff in XPRT had previously disclosed some of the subject matter to the defendants under a confidentiality agreement with a forum selection clause. The Court held, however, that the “Agreement’s forum selection clause controls only breaches of confidentiality,” due to language in the clause stating that it applied to breaches “arising out of this Agreement” and because “the Agreement explicitly states that there is no bar from bringing patent infringement cases.” Id. at 6.

The plaintiffs had represented that the asserted patents were “clearly related” to asserted patents in an earlier suit between the parties. In response, Judge Robinson noted that, even if the court were to assume that the plaintiffs’ representations were correct, the court could not accommodate the plaintiffs’ request to have additional time for discovery in the court’s present 2012 trial calendar. Id. at 1. Judge Robinson also noted that consolidating cases would have turned a six-patent case into an eight-patent case, which would have required even more trial time. Id.

Judge Robinson then denied the plaintiffs’ request to lift stay because the “plaintiffs intend to pursue its appeal of the ITC’s adverse ruling to the Federal Circuit absent consolidation.” Id. at 1-2.

In Everglades Interactive, LLC v. Playdom, Inc., Civ. No. 10-902-SLR (D. Del. Jun. 8, 2011), Judge Robinson denied the defendants’ motion to transfer the case from the District of Delaware to the Northern District of California.

The defendants argued, inter alia, that the Northern District of California was “the more convenient and appropriate venue” because Northern California was the principal place of business for the U.S. defendants as well as the plaintiff. Id. at 5. But after noting that all of the U.S. defendants were incorporated in Delaware, id. at 2, the court reiterated — “consistent with its usual mantra” — that defendants who choose to incorporate in Delaware “must also bear the burden of being eligible to be haled to Delaware for lawsuits[,]” id. at 6.

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